The Complainants are Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), and VLE Limited of London, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Randy Couture of Lexington, Kentucky, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2019. On January 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 5, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainants are both part of a group of companies that are collectively known as “the Virgin Group”. The Virgin Group was originally established by its founder and chairman Sir Richard Branson in the United Kingdom.
The Second Complainant owns unregistered trademark rights in the NECKER ISLAND mark and licenses the First Complainant’s marks. The First Complainant owns a substantial portfolio of trademark registrations, such as:
- United Kingdom Trade Mark Registration No. 2375670 for the VIRGIN UNITE mark registered on June 17, 2005;
- United States Registration No. 3472228 for the VIRGIN UNITE mark registered on July 22, 2008;
- European Union Registration No. 1290574 for the VIRGIN mark registered on February 3, 2015;
- International Registration No. 1141309 for the VIRGIN mark registered in May 21, 2012.
The Respondent registered the Domain Names and on November 15, 2018. The Domain Names do not resolve to any active websites. The Domain Names have been used through email addresses for phishing emails, which were a part of a fraudulent scheme targeting politicians and business people. 5. Parties’ Contentions A. Complainant
The Complainants claim that the Domain Name is identical to the First Complainant’s Registered Mark VIRGIN UNITE. The Complainants contend that the addition of a hyphen does not detract from confusing similarity between the First Complainant’s mark and the Domain Name . The Complainants assert that the Domain Name is confusingly similar to the Second Complainant’s unregistered trademark NECKER ISLAND. The Complainants contend that the Domain Name incorporates the first and most distinctive element of the Second Complainant’s Mark, “necker”. The Complainants argue that although the Domain Name ˂˃ omits the word “island” from the Second Complainant’s Mark, Internet users will still be able to clearly and immediately perceive the Domain Name as referring to the Necker Island resort, by virtue of the use of the highly distinctive NECKER. The Complainants state that the addition of the prefix “bvi” in the Domain Name ˂˃ does not prevent a finding of confusing similarity, because it will be seen as a geographic descriptive element relating to the location of the Necker Island resort.
The Complainants assert that the Respondent has no rights or legitimate interests in the Domain Names. The Complainants claim that there is no evidence that the Respondent used the Domain Names in connection with bona fide offering of goods or services and that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names. The Complainant alleges that the Respondent used the Domain Names through email addresses in its impersonation of the managing director of the Complainants’ charitable foundation and of purported personal assistant of the founder of the Virgin Group. The Complainants claim that the Domain Names do not resolve to any active websites.
The Complainants allege that the Respondent registered and is using the Domain Names in bad faith. The Complainants claim that the Respondent is using the Domain Names through email addresses representing to be sent by the managing director of the Complainants’ charitable foundation or the founder and chairman of the Virgin Group. The Complainants contend that the emails have targeted politicians and business people in attempts to defraud them out of large sums of money. The Complainants argue that it is inconceivable that the Respondent was unaware of the First or Second Complainant prior to registering the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6.1. Consolidation of the Parties
Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. Multiple complainants may file a single complaint against a respondent if the complainants establish that1 : “(i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.2
The Panel finds that consolidation in this case is proper. The Complainants Virgin Enterprises Limited (the “First Complainant”) and VLE Limited (the “Second Complainant”, and together with the First Complainant, the “Complainants”) filed a joint Complaint against the Respondent. The Complainants claim to have a common grievance against the Respondent because there is a common legal interest in rights affected by the Respondent’s conduct. The Complainants are both a part of the Virgin Group. The Second Complainant is licensed to use the registered trademarks owned by the First Complainant. The activities of the Respondent, explained in more detail in Section 6.2 B and C of this Decision, have affected both Complainants, and they therefore have a common grievance against the Respondent. It is equitable and procedurally efficient to permit the consolidation. Despite ample opportunity to do so, the Respondent did not object to the consolidation or indicated that it would suffer any prejudice. 6.2. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainants must prove each of the following elements with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
A complainant challenging the registration and use of a domain name is required to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Pursuant to section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. Because the First Complainant submitted evidence of its ownership of the VIRGIN UNITE and the VIRGIN trademark registrations, it has satisfied the standing requirement in this case.
The Second Complainant asserts common law, or unregistered, trademark rights in the NECKER ISLAND mark. “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”.3 “Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”.4 The evidence on record shows continuous and consistent use of the NECKER ISLAND mark in connection with the luxury resort. Through the Second Complainant’s use of NECKER ISLAND, it has developed substantial goodwill in the name and owns unregistered rights in the mark NECKER ISLAND. In addition, previous panels have found that the Second Complainant owns unregistered trademark rights in the NECKER ISLAND mark for the purposes of standing in UDRP proceedings.5
The Complainants allege that the Domain Names are confusingly similar to their trademarks. “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.6 ”Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.7 “The applicable gTLD in a domain name […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.8
The Domain Name ˂˃ is identical to the First Complainant’s trademark VIRGIN UNITE. The only difference between the mark and the Domain Name is the addition of the hyphen in between “virgin” and “unite”. The hyphen would not be pronounced by consumers and is simply to indicate a space between the words “virgin” and “unite”, as exists in the First Complainant’s Registered Mark.
The Domain Name
Thus, the Complainants have satisfied the first element of the UDRP. B. Rights or Legitimate Interests
To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.9
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(iii):
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts that there is no evidence that the Respondent is commonly known by the Domain Name or of the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Neither is the Respondent making a legitimate noncommercial or fair use of the Domain Names. The Domain Names do not resolve to any active websites. The evidence on record demonstrates the Respondent’s misuse of the Domain Names in its impersonation of the managing director of the Complainants’ charitable foundation and purported personal assistant of the founder of the Virgin Group in an elaborate scheme to defraud recipients of large sums of money. Prior UDRP panels have held that the use of a domain name for illegal activity, such as impersonation, or other types of fraud “can never confer rights or legitimate interests on a respondent”.10
The Panel finds that the Complainants made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Domain Names. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name;11 the Respondent has failed to do so, and consequently the Panel finds that in this proceeding the Complainants have satisfied paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires a “finding that both the registration and use were in bad faith.”
The Complainants provided ample evidence to support their contention that the Respondent registered and used the Domain Names in bad faith.
Paragraph 4(b) of the UDRP sets forth circumstances, which shall be considered evidence of the registration and use of a domain name in bad faith. The examples of bad faith registration and use set forth in paragraph 4(b) of the UDRP are not meant to be exhaustive of all circumstances from which such bad faith may be found. Prior UDRP panels have held that “the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (…) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.12
The evidence on file shows that the Respondent used the Domain Names through email addresses representing to be sent by the managing director of the Complainants’ charitable foundation or by purported personal assistant to the founder and chairman of the Virgin Group. The emails have targeted political and business people in attempts to defraud them out of large sums of money. Based on the use of the Domain Names, the Panel finds that the Respondent plainly was aware of the Complainants’ registered and unregistered marks when registering the Domain Names.
The Panel also finds that the Respondent’s use of the Domain Names for phishing emails to defraud recipients of large sums of money, constitutes bad faith use of the Domain Names. See, e.g., L’Oréal v. Domains By Proxy, LLC, Registration Private, DomainsByP / Robert Bowman,WIPO Case No. D2017-1387; Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0043, where the panel stated that, “Respondent has used the disputed domain name as a fake email address in order to impersonate the CFO of Complainant A and mislead some employees, recipients of the emails. The fraudulent intentions of the Respondent are hereby clearly unveiled, and enable the Panel to conclude that the disputed domain name is used in bad faith"; Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel,WIPO Case No. D2016-0387 (“While this scam is not, as Complainant has noted, a ‘typical’ case of phishing, it is nevertheless clearly a way in which ‘Internet fraudsters impersonate a business’ – something that the U.S. Federal Trade Commission associates with phishing activities”); and Adams and Remers LLP v. Michael Hallier/Whois Agent, Whois Privacy Protection Service, Inc.,WIPO Case No. DME2015-0005 (“It is clearly a use intended to attract, for commercial gain, Internet users to the Complainant’s online address thereby creating confusion with the Complainant’s mark as to the service being offered at that location. Such use is clearly fraudulent and in bad faith”). Thus, the Panel concludes that the Domain Names were registered and are being used in bad faith.
Furthermore, although the Domain Names do not resolve to any active websites, passive holding of the Domain Names does not prevent finding of bad faith. “[P]anelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”.13 One of the factors applied to passive holding doctrine is “the implausibility of any good faith use to which the domain name may be put”.14 Here, the bad faith registration and use of the Domain Names in relation to the phishing email activity, makes implausible any good faith use of the Domain Names in the future.
Therefore, the Panel finds that the Complainants have established the third element of paragraph 4(a) of the UDRP. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the First Complainant.
Olga Zalomiy
Sole Panelist
Date: February 15, 2019
1 Section 4.11.1, WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 Id.
3 Section 1.3., WIPO Overview 3.0.
4 Id.
5 Virgin Enterprises Limited and Virgin Limited Edition v. Moore Williams,WIPO Case No. D2018-2210; Virgin Enterprises Limited and Virgin Limited Edition v. Shubab Consult,WIPO Case No. D2018-2206.
6 Section 1.7, WIPO Overview 3.0.
7 Section 1.8, WIPO Overview 3.0.
8 Section 1.11.1, WIPO Overview 3.0.
9 Section 2.1, WIPO Overview 3.0.
10 Section 2.13.1, WIPO Overview 3.0.
11 Section 2.1, WIPO Overview 3.0.
12 Section 3.4, WIPO Overview 3.0.
13 Section 3.3, WIPO Overview 3.0.
14 Id.
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